The life sciences sector is a prolific filer of divisional patent applications, and it has always been accepted that there is a hard and fast deadline by which this must be achieved.
Yet, a recently published decision from the European Patent Office (EPO) appears to have changed the game.
Decision J 0001/24 – 3.1.01 creates an inadvertent ‘Get Out of Jail Free’ card for applications that are past due.
In-house counsel should be aware of this loophole for two key reasons.
Firstly, it creates an opportunity to rectify an error in the unlikely event that their own divisional patent application filing deadline is missed.
Secondly, it necessitates additional caution when monitoring competitors’ IP strategies, as they also have the means of filing for a divisional patent application beyond the usual timeline.
What is the loophole?
Existing legislation states that a divisional application must be filed from a pending parent application in line with Rule 36(1) EPC.
Prospective applicants formerly understood that the final deadline to file for a divisional patent in view of the grant of the parent had always been one day prior to the mention of grant of the parent application in the EP bulletin (G1/09).
Previously considered the final nail in the coffin, missing a divisional filing deadline was seen as a fatal error with no room for mitigation.
This concrete deadline, alongside that in place for the filing of an opposition, ranked equally in terms of having no scope for circumnavigation or objection.
In one fell swoop, Samsung Electronics changed the narrative.
Having uncovered a complex loophole in patent law, the multinational tech giant has enabled itself to keep a parent application pending by appealing its own decision to grant.
Whilst seemingly counterintuitive, this resets the date proposed for the mention of grant and thereby prolongs the divisional filing period.
A breakdown of the process through which this was achieved is documented in Figure 2.
As detailed above, a decision to grant on the parent case EP3660979 was issued on 18 February 2021, making 17 March 2021 the original date of publication for the mention of grant.
In routine circumstances, 16 March 2021 would reasonably be considered the final date for filing a divisional application, it being one day prior to the mention of the grant of the parent.
However, this is where the timeline strays from the conventional path.
On 16 April 2021, just inside the two-month appeal period set by the date of the decision to grant, Samsung opted for a highly unorthodox approach in which it appealed against the EPO decision to grant its own parent application (incurring the payment of the appeal fee in turn).
Patent professionals might question the plausibility in Samsung claiming to have been a person adversely affected by the EPO decision to grant their patent in line with Article 107 EPC.
However, as confirmed by J 0001/24, “the EPC has no provision restricting appeals of the applicant against the grant of a patent. Such an appeal cannot therefore be seen as clearly inadmissible”.
The eventual outcome of the appeal was that “the decision to grant maintained its effect and remained valid…[and]…the [original] date of publication of the mention of the grant had been deleted”.
Suddenly, the parent application was pending again, giving way to the possibility that the corresponding divisional application (EP3375040) could lawfully be filed on 24 May 2021, in advance of the “new” mention of grant on 15 June 2022.
Interestingly, the decision states that the outcome of the appeal is ultimately irrelevant:
““The current practice of the EPO treats appeals against the grant of a patent as appeals validly filed, with the consequence that the date of mention of the grant is deleted in such a case. If later the appeal is withdrawn or turns out to fail, there will be a new date of publication of the grant.”
Exploring the finer details, Rule 103(1)(b) EPC might even suggest a free (or at very least comparatively inexpensive) extension of the divisional filing deadline if the appeal is withdrawn before the filing of the statement of grounds of appeal and the expiration of the window to file that statement, as the appeal fee is refunded.
What does this mean for future proceedings?
If we are to endorse one major takeaway from this case, it is the newfound flexibility of the deadline to file a divisional patent that was once considered entirely immutable.
It also puts missing the deadline by which a notice of opposition must be filed in a league of its own, as it now appears to be the last fatal error without a recognised EPO antidote.
Will this become a new normal for organisations when filing for divisional patents?
In short, no.
It merely presents legitimate filers with an opportunity to rectify error if they find themselves having missed the deadline for whatever reason.
In these circumstances, the lone prospect of a ‘Get Out of Jail Free’ card makes for a noteworthy discovery.
Of course, it remains best practice to ensure that all divisional applications are filed with the parent pending period still active, saving the hassle of having to depart from the comfort of convention.
However, for the prudent patent professional wishing to relay with confidence if any given European patent family includes a divisional application, this decision will force them to wait until the term for potential appeal has expired before confirming.
As inherent stakeholders in patent law, companies in the life sciences sectors and all who engage with the EPO must be made aware of this decision.
While improbable, the exploitative potential of the loophole in question could see the EPC over-rule the decision outright.
At the very least, some form of restriction on the circumstances in which an applicant can file a valid appeal against its own successful decision to grant seems pertinent.
